Trademark Act Indepth discussion41 A brief introduction Essay

4) Trademark Act – In-depth discussion4.1) A brief introduction A Trademark Act is commonly implemented with the intention to safeguard businesses’ identity or logo so as to prevent other businesses from posing, and therefore, confusing the public as to the integrity of the services or goods of said business. Trademarks are also commonly stated to be a logo or sign a business uses to distinguish its goods or services from others in the same industry. A mark of certification(like healthier choice, or Hala mark) is also considered a trademark by Singapore’s Trade Marks Act4.

2) Process of registrationDepending on the country and type of register, the registering of a trademark may have different impacts. For example, a trademark registered in the UK can be either an international trademark or a local trademark, both allowing for different powers granted to the registered person(s) to act on any infringement of the trademark in different ways. Likewise, a trademark registered in a state in the United States of America may not be considered a trademark in another state of the same country.

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The cost of registration for each type of trademark are also different based on local.4.2.1) Registering a trademark Generally, in Singapore, Trademarks are registered to a Registrar, the Intellectual Property Office of Singapore, where a register of known or registered trademarks are held. The applicant of a trademark will be required to submit an application which will include a request for the registration of the trademark and will usually contain a list about what goods or services will be covered under the trademark upon registering. A fee is also paid for the process of application and the application will only be acknowledged after all fees are paid or considered to be paid. Registered trademarks will then be registered for 10 years and can be renewed for another 10 years at any time during the current registration up to 6 months after the expiry of the trademark after paying fees required. Also, Trademarks that violate national laws or international conventions on trademarks such as the Paris Convention for the Protection of Industrial Property or Madrid Protocol are rejected by Intellectual Property Office of Singapore as Singapore is a country in agreement with these conventions. Through such conventions, international trademarks registered under the World Intellectual Property Organisation (WIPO) in Switzerland also have the right to power a locally registered trademark would in Singapore, within the power the laws of Singapore grants to local trademark owners. Internationally registered trademarks are considered registered trademarks in Singapore upon the request of the owner of the trademark4.2.2) Grounds for rejection of trademarks Singapore, like many other countries, also covers some grounds for refusal in their Trademark Act. As some of the sections in Singapore’s Trademark act are derivative of UK Trademark Act 1994, some of the Act’s grounds for rejection are derivative of the UK’s version of the Act, such as how trademarks will still be considered used by the Registrar up to one year after the expiry of said act and any would be registered trademark that otherwise would be infringing on said expired trademark will be rejected. Trademarks are also rejected for only relying on one of the following elements to make them distinct, to list a few:- The properties of the goods themselves.- The shape of the goods.- The shape of the natural results of the use of the goods.- The implied locality of the production of the goods.- The reliance on the use of a word that has become customary in the industry of which the trademark is applied for- Etc.It should also be noted that trademarks that contain no distinctive elements or are prohibited by law will be rejected.4.3) Validity of a Registered Trademark In various different countries that accept the use of a trademark system, it should be noted that despite being registered, there are a number of ways for a trademark to lose its validity. For example, one way to lose validity is to not have used, or reasonably used in relation to the goods and services a trademark was registered for a consecutive 5 years after a trademark has been registered without a proper reason for its disuse. Some other reasons for a registered trademark to lose its validity is if another party disputes its registration within 6 months of its registration and successfully proven that the registered trademark either infringes on another registered trademark that was registered before it with the owner of the infringing trademark having known or ought to have known that his trademark was infringing on the registered trademark( in another words, in bad faith) or had elements in the trademark been ubiquitous with terms used in the industry it’s been applied for.4.4) Infringement of a Registered Trademark4.4.1) Infringement (Civil Lawsuit) For the case of the infringement of a registered trademark, a civil lawsuit can be called for. The cases covering infringement usually refers to if a trademark that was newly registered was to infringe on to the elements of a previously registered trademark, and the owner of the previously registered trademark files a civil lawsuit within 6 months of the infringing trademark’s registration. If proven, the plaintiff may claim an injunction with one of the following:- Payment for damages- An account of the profit made by the other party under the sale of goods/rendering of services under the trademarkOr if the infringement involves the counterfeiting of trademarked goods or services:- damages and an account of any profits from the sale of goods or rendering of services under the trademark not including in the computing of damages.It should be noted that the amount of damages and the account of profits paid involved in counterfeiting is decided by the Court. Also note that any goods of the defendant that infringes on the registered trademark may be required to be destroyed or secured and handed over to the Court, which if no order has been given to destroy the goods within 6 months of the securing of the goods, will either be destroyed or returned to the defendant. If the defendant proves that he has not infringed upon the trademark, he may be entitled to a declaration of the claim against infringement are unjustifiable, an injunction of the continuance of the claims and damages based on the loss sustained by the claim. The defendant of the counterclaim may avoid the payment of the above if he had shown respect to the plaintiff during the previous cases, but will still have to pay if the defendant can prove that the plaintiff’s trademark was invalid or had expired before the proceedings had begun. The plaintiff of the infringement civil lawsuit must have a Trademark that has been registered and not been in disuse for 3 or more consecutive years to be considered valid.4.4.2) Infringement (Criminal Lawsuit) Infringement of a trademark with use of counterfeits is considered an offense by the Trade Marks Act Part IV Section 46. Therefore those charged with infringement of a trademark due to the counterfeiting of or the application of a trademark without the consent of proprietor the trademark are likely to face both civil and criminal lawsuits. If an item is sold with a trademark and/or a mark similar to or resembles a registered trademark, the goods are considered to be counterfeit( if it was made/sold without the consent of the trademark’s owner). If the prosecutor of the case can prove the charges against the accused for either counterfeiting goods and services under the trademark without consent, or using the trademark in any advertisement, business documents, goods(or their labels) or services, the accused may face a sentence of:- a fine not exceeding $100,000- a jail term not exceeding 5 years- or to bothThose who possess equipment or tools specialised in making counterfeit copies of the goods with registered trademarks without the consent of its owner(s) are also liable for the same punishment as those who use a trademark or counterfeit a trademark.Anyone who imports those goods that are deemed counterfeit, or equipment meant to manufacture counterfeit goods are also liable for the same punishment.4.4.3) Other Offenses not counted under infringement (Criminal Lawsuit)Among the offenses listed in the Trade Marks Act, there are some which do not constitute to the infringement of registered trademarks. Some of which are:- To make an unregistered trademark pose as a registered one,- To falsify a trademark into the register- Or to have trademarks containing the coat of Arms or Flags of a country without prior consent of those countries. 4.5) Well-Known Trademarks In a part of the Trade Marks Act, there is a section which covers well-known, but unregistered trademarks in Singapore. While unlikely to be used, the provision covers how unregistered trademarks may apply for an injunction on another trademark or any trade of counterfeit goods bearing that trademark if the unregistered trademark has become well known by the general public in Singapore.4.6) Ownership and Licencing of a Trademark Owners of trademarks can give licence to other companies or person(s) the right to use a trademark owned by them. The licence must be declared to the Registrar and must be recorded on a document with either the seal of the company or the signature of the owner which can be used for later reference. There are also multiple types of licences that can be granted, such as a licence for the use of the trademark in any production, including the sub-licencing of other companies, or licences that only allow the sale of goods branded under the trademark. There can be multiple owners of a trademark as well. Each owner will have an equal representation and rights to power as any other owners of a trademark unless otherwise agreed on by both parties. When a civil lawsuit begins with the trademark in question, all owners of the trademarks must participate in the lawsuit, in person or by proxy, to either the defendant or the plaintiff’s side. Those who are sided with the defendant but do not attend the proceedings are not liable for claim should the Court find the defendant liable. 4.7) International Agreements on Trademarks While trademarks are usually limited to a territory or country, there are some conventions and treaties on how trademarks are handled in some countries. Among a few of which Singapore is apart of are the TRIPS Agreement, the Paris Convention for the Protection of Industrial Property and the Madrid Agreement and the Madrid Protocol that was created to enforce the Madrid Agreement. When a trademark is disputed between two different countries, it can be settled at the International Court of Justice, although this is rarely done.4.7.1)The Paris Convention for the Protection of Industrial Property As a part of the Paris Convention for the protection of Industrial Property (also referred to as the Paris Convention) is an agreement meant to protect industrial property, which also includes Intellectual properties like trademarks. The Convention’s provisions binds any member nations to treat foreign industrial Property in the same manner that they treat their own, which allows for fair arrangements for foreign trademark owners in countries outside their own. Registering a trademark in a member nation If a proprietor decides to file for a trademark in one of the participating countries, the proprietor can also apply for his trademark to be registered in another member country up to 12 months after the trademark has been registered upon request. Trademark registered in another country is considered to have been registered at the same date as the original date of registration of the original trademark, and are considered trademarks that are independent of the original trademark. On the other hand, the registered trademark is not used in any of its registered country, that country’s Registrar holds the right to revoke its registration. Applications for the registration of a foreign registered trademark cannot be invalidated or refused by any member nations. Rejecting registration of a foreign trademark While the application for registering a trademark may not be refused, a foreign trademark may be refused on the same grounds as any other local applicant. The foreign trade mark may also be refused if there is a similar or identical well-known trademark already in the region.4.7.2) Singapore Treaty on the Law of Trademarks A Treaty meant to create a modern and dynamic international framework to synchronize the administrative processes of the registration of a trademark. Meant to help in the classification of marks across different countries by standardising the requirements and expanding on previously established classification of marks in view of the developments in communication technology, it includes how registration and relief should be handled. On top of what has been stated, the treaty also allowed for applicants of trademarks more leeway on registration timing like extension of deadlines of registration due to unforeseen circumstances. The treaty also allows for developed countries who are members of the treaty to help developing countries with the establishment of a framework for the administration of trademarks. All in all, the treaty gives more flexibility to how a trademark is registered in its contracted members. The treaty 4.7.3) The Madrid Agreement and the Madrid Protocol An Agreement in where all member nations are apart of an international Trade Mark System where trademarks registered in a member country may be registered in multiple member countries in a single application. The Madrid Protocol is an extension of the Madrid Agreement to make the Madrid System established by the agreement more flexible and compatible with more countries.While registering under the Madrid System can help shorten and significantly reduce the fees needed to register the trademark under multiple countries, the application process is also significantly more expensive and the registering period may also last up to 18 months instead of the usual 12 months when other trademark holders may choose to dispute the validity of the trademark. It should also be noted that unlike the Paris Convention, if the original trademark is modified or deemed invalid, all trademarks registered under the original will be modified or deemed invalid like the original trademark.4.8) Some Personal Opinions and Views on the Trade Marks Act Unlike many other acts to protect other types of intellectual property, the Trade Marks Act very lenient in terms of its views on what counts as an infringement. While parts of the Act differ from country to country, at the very least , the 3 Acts that I used to cross reference their clause were very alike in many ways. The 3 Acts I decided to reference were from Singapore, Malaysia and the United States of America. While the wording of the Act was different between Singapore and Malaysia, many of their clauses were similar, such as how registration and infringement were handled, not including punishment for infringement. Both Singapore and Malaysia also took measures to protect well-known trademarks, which comes to me as a surprise as I had expected that unregistered trademarks be not covered by the Act. It should be noted that under the Lanham (Trademark) Act of the United States of America, I could not find a clause that allows any well-known trademarks to apply for the injunction of any counterfeit or non-consented manufacture of goods under the well-known trademark if the trademark was not registered. I suspect that the reason for it was due to the lack of a mention on the Paris Convention for the Protection of Industrial Property in the Act. As Singapore is a member of the Paris Convention, Singapore acknowledges the use of a well-known trademark as a registered’ trademark. On top of those, all 3 nations , Singapore, Malaysia and the United States of America are part of the Madrid Protocol which allows international trademarks that are registered in the WIPO to be considered registered trademarks in member countries upon request. It also comes to me a surprise that two similar, and registered trademarks are allowed in the Registrar if no case is pursued. There is also a large amount of allowance when it comes to the use/disuse of a registered trademark, and while a registered trademark may be considered invalid, expired, or a trademark that was once registered can also be reinstated into a registered trademark.

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